Emerson Electric Co. v. Yan Li / jin feng wei
Claim Number: FA1709001750105
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Yan Li / jin feng wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonnetworked.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2017; the Forum received payment on September 21, 2017.
On September 21, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <emersonnetworked.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emersonnetworked.com. Also on September 25, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the default language of the proceedings in Chinese. The Panel may decide, per Rule 11, that because the Respondent signed an agreement in Chinese, the Complaint should be resubmitted in Chinese and the case recommenced. Alternatively, the Panel may decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English); see also Dama S.p.A. v. Duan Zuochun, D2012-1015 (WIPO July 5, 2012) (sufficient evidence adduced by the Complainant to suggest that the Respondent is conversant in English).
Complainant contends Respondent is conversant in English based upon the facts that the domain name is comprised of English words, and the resolving website features various phrases in English, including “Consider it Solved.” Additionally, Complainant previously sent a cease-and-desist letter to Respondent which gave Respondent a chance to request continued communications to be in Chinese, but was never responded to. Further, Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings. This delay would be especially unfair considering the abusive nature of Respondent’s use of the disputed domain name.
The Panel determines that Complaint has submitted sufficient evidence to show that Respondent is conversant in English; therefore, English shall be adopted as the language of the proceedings.
A. Complainant
Complainant, Emerson Electric Co., uses the EMERSON mark to provide and market its products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 111, 931, registered Aug. 15, 1916). Respondent’s <emersonnetworked.com> is confusingly similar to the mark as it contains Complainant’s mark in its entirety, merely adding the descriptive term “networked” and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <emersonnetworked.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the EMERSON mark. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain to pass off as Complainant. Respondent also uses Complainant’s name and information as metadata to trick users into visiting Respondent's web site.
Respondent has registered and used the <emersonnetworked.com> domain name in bad faith. Respondent creates a likelihood of confusion with Complainant’s mark in attempting to commercially gain from such confusion. Additionally, Respondent’s use of the disputed domain name is disrupting Complainant’s business. Respondent has failed to respond to cease and desist letters from Complainant. Finally, Respondent had actual knowledge of Complainant’s EMERSON mark and business prior to registration and during subsequent use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Emerson Electric Co., is a diversified, global technology and engineering company. Complainant uses the EMERSON mark to provide and market its products and services. Complainant has rights in the mark based upon registration with the USPTO (e.g. Reg. No. 111, 931, registered Aug. 15, 1916). Respondent’s <emersonnetworked.com> is confusingly similar to the EMERSON mark.
Respondent does not have rights or legitimate interests in the <emersonnetworked.com> domain name. Respondent is using the disputed domain name in connection with a commercial website, one that prominently features the EMERSON logo and trademark and offers for sale products branded with the EMERSON trademark. Respondent therefore is using the disputed domain to pass off as Complainant. Respondent also uses Complainant’s name and information as metadata to trick users into visiting Respondent's web site.
Respondent has registered and used the <emersonnetworked.com> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the EMERSON mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <emersonnetworked.com> is confusingly similar to the EMERSON mark as it contains the mark in its entirety, and adds the descriptive term “networked” along with the gTLD “.com.”
Respondent has no rights or legitimate interests in <emersonnetworked.com>. Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Yan Li / jin feng wei.” Complainant has not authorized Respondent to use the EMERSON mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent has failed to use the <emersonnetworked.com> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). Instead, Respondent uses the disputed domain name to pass off as Complainant. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). In addition, Respondent is using the metadata to increase the likelihood that an Internet user searching for Complainant through a search engine would come across the <emersonnetworked.com> domain name and subsequently become confused as to its source.
Respondent’s use of the <emersonnetworked.com> domain name disrupts Complainant’s business. Respondent purports to offer Complainant’s goods on the website resolving from <emersonnetworked.com>, which are at best Complainant’s own products, and may be counterfeit products. Disrupting a complainant’s business using a confusingly similar domain name to mislead consumers and then offering the complainant’s goods or services is evidence of bad faith per Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Respondent is intentionally attempting to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s EMERSON marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Here, Respondent is attempting to cause consumer confusion in an attempt to profit from the confusion. Respondent is using the fame of Complainant’s trademarks to improperly increase traffic to the domain name in order to purportedly sell Complainant’s products for Respondent’s own commercial gain. Use of a confusingly similar domain name to mislead users shows bad faith registration and use per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In addition, Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Panels have held that failure to respond to a cease-and-desist letter may properly be considered in finding bad faith registration and use of a domain name. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).
Finally, Respondent registered the <emersonnetworked.com> domain name with actual knowledge of Complainant’s EMERSON mark. Complainant’s marks are famous around the world. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.) The Panel finds that Respondent had actual knowledge of Complainant’s rights in the EMERSON mark when Respondent registered and subsequently used <emersonnetworked.com>. Therefore, Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonnetworked.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 1, 2017
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